The USPTO is seeking comment on two proposals that would expand the scope of who may become a “patent attorney”
- Expanding admission criteria for registration to practice in patent cases before the USPTO.
- Expanding opportunities to appear before the Patent Trial and Appeal Board (PTAB)
Comments should be submitted by Jan 17, 2023 via the eRulemaking Portal.
Earlier in 2022, the USPTO made some minor expansions to the criteria for registering as a patent attorney, but this new proposal offers the possibility of a broader inclusive market and a mechanism for the Office to regularly update eligibility criteria. It also asks whether there should be a separate bar for design patent practitioners. Things could get really interesting (in a good way) if folks trained in design (rather than engineering) start participating at the USPTO level.
On the PTAB side, the PTO is seeking comments about whether non-patent-attorneys should be permitted to represent clients in AIA proceedings. The USPTO also asks about potential development programs such as LEAP.
Under our new Equity Constitution, no one should have to have any qualifications to practice before the USPTO because of the disparate impact.
Hmm, rather than “cement in” design patents, maybe we should go back to the drawing board and remove design patents from the utility patent system.
Or, at least, amend 35 USC to take into account the differences.
Agreed — but such would be easier (in my view) to simply set up on its own.
I think that these people can be allowed to practice for design patents and before the PTAB regardless of education, so long as the pass the same patent bar. Design patents are stupid. Any monkey can do it. The PTAB is not stupid, and it takes some sophistication. But if clients want to hire lawyers that don’t have a science degree, they should be free to do so.
Spoken like a true chimp.
Seems odd the alignment with those that I consider anti-patent with the expressed view that “let clients decide,” as if clients somehow removed wholesale the sense that our profession police’s itself (and why ethics rules exist in the first place).
I have seen many fine lawyers do great PTAB work after being admitted PHV. If we now let them be actually admitted, but require them to pass the patent bar, we are BETTER off. Patent pros is a different story and I would keep it the way it is (except for design patents, which anyone with a pulse can handle).
A few thoughts:
(1) The existence of patent agents and tax attorneys (i.e., accountants who are admitted to practice before the IRS’ tax court but not in federal district courts) shows that it is possible for the bar to police the distinction between limited admission and general admission to the practice of law.
(2) That being the case, there is no reason why we could not also have (e.g.) limited admission professionals who might only practice in family court, or in certain other more specialized areas of the law. This would increase the supply of professional legal assistance in various areas, making such assistance more affordable to the public.
(3) With that in mind, I agree that it makes sense to create a limited admission category for design professionals. It is good for the consuming public (i.e., design patent applicants) to have an added range of professionals from which to choose.
(4) I also favor the idea of letting not registration-number bearing litigators practice in front of the PTAB for IPR/PGR. If the client is o.k. with entrusting such a matter to someone with a bar admission but without a registration number, that should be good enough for the rest of us. Such a person would be allowed to handle exactly the same issue in front of a district court, so why should they be regarded as unable to handle the issues in front of the PTAB. It might be the case that they are unable to handle the issue, but that is true of any given legal professional (even one with a registration number), and that risk does not keep any of us awake at night. Be it on the client’s own head if s/he makes a poor choice of legal professional, but it should not trouble us.
A nit to pick that doesn’t detract from Point (1):
A “tax attorney” is a licensed attorney, self-described as an attorney whose practice is limited to tax matters, who like all attorneys may well be admitted to the Federal courts.
An “IRS enrolled agent” is (with rare exceptions) a non-attorney who has passed a multi-part exam and is permitted to represent taxpayers in various matters before the IRS. Attorneys are not required to take the exam to be registered to practice before the IRS.
It is not coincidence that “agent” is used for both PTO and IRS qualified lay representatives. Both the PTO and IRS seem to deal with the parallel attorney/agent statuses just fine.
Thanks for catching and clarifying that point of terminology.
Cue the diaper soilers on how changing the registration system in any way will lead to the collapse of western civilization. In 3, 2,…
I ain’t fer it! I’m agin’ it!
based
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